DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on October 3, 2025 is in compliance with the provisions of 37 CFR 1.97, except that it fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Accordingly, the information disclosure statement is being considered by the examiner, except for the Japan Patent Office, Office Action which has not been provided and has been crossed out.
Claim Objections
Claim 27 is objected to because of the following informalities: claim 27 includes the limitation that the plasticizer system comprises 10 to 20 phr of octyloleate, but claim 14 on which it depends has been amended to have the same range of octyloleate, and thus this range is duplicative. Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 14-19 and 24-31 are rejected under 35 U.S.C. 103 as being unpatentable over Isitman (US Pub. No. 2017/0349733) in view of Saito (US Pub. No. 2023/0043282) and Tanaka (US Pub. No. 2015/0007917).
Regarding claims 14, 16-17, 19, 25 and 27, Isitman teaches a tire tread comprising a rubber composition (paragraph [0006]) with one or more rubbers or elastomers containing olefinic unsaturation and having a Tg of less than -50 degrees C, where preferred rubber or elastomers are SBR, natural polyisoprene, and butadiene, where the rubbers may be alkoxy-silyl ended functionalized solution polymerized polymers, including SBR (paragraphs [0015] and [0022]), the rubber composition can include about 50 to about 130 phr of silica (paragraph [0029]), resins including tackifying resins and plasticizers (paragraph [0045]), from 30 to 65 phr of a fatty acid monoester is present, where this fatty acid monoester can comprise octyl oleate as well as other compounds (paragraphs [0006]-[0009]) (this resulting in a range of from 0 to 65 phr of octyl oleate, overlapping the claimed ranges of claims 14 and 27), sulfur donors and vulcanization accelerators are present and vulcanization takes place (paragraphs [0045]-[0050]), with specific embodiments having 20.6 phr of emulsion polymerized SBR with a Tg of -53 degrees C and 90 phr of silica (tables 3-4, compositions E11-E14). While it is noted that the SBR of the specific embodiments is not functionalized (modified as claimed), Isitman specifically discloses that the SBR may be functionalized (paragraph [0022]), rendering such an alternative embodiment obvious. Isitman does not specifically disclose that the resin is hydrocarbon resin, or the softening point or average molecular weight of the resin. Saito teaches using a hydrogenated resin in an amount of 5 to 50 phr (overlapping the ranges of claims 19 and 27), the resin having a softening point of higher than 110 degrees C (overlapping the ranges of claims 14 and 19), and a molecular weight of 200 to 1200 g/mol (paragraph [0008]) (overlapping the ranges of claims 14 and 19), where the resin can be a C5-based resin, a C5-C9-based resin, or a C9-based resin (paragraph [0050]). It would have been obvious to one of ordinary skill in the art to use a hydrocarbon resin as taught by Saito in the tire tread of Isitman in order to provide a tire having an excellent wet grip performance and a low rolling resistance (see paragraphs [0009] and [0043]-[0047]). Isitman does not specifically disclose the longtotal index of the tread pattern. Tanaka teaches using a tread pattern to improve on-ice performance without sacrificing dry performance and on-snow performance (paragraph [0004]), where the preferable sum Et of the total axial lengths of all the blocks in the tread is not less than 30000 mm and not more than 35000 mm (paragraph [0103]), with a specific tire size of 11R22.5 (paragraph [0109]), such a tire having an outer circumference of about 3200 mm to 3233 mm, resulting in a longtotal index range of from 9.28 (30000/3233) to 10.94 (35000/3200), falling within the claimed ranges of claims 14, 16 and 17. It would have been obvious to one of ordinary skill in the art to use a total axial length and tire size (resulting in longtotal index) as taught by Tanaka in the tire of Isitman (combined) in order to prevent deterioration of running performance on icy and snowy roads, as well as to prevent deterioration of steering stability (see Tanaka at paragraph [0104]).
Regarding claim 15, the glass transition temperature of the modified styrene-butadiene copolymer is inherent to the material, and the method of measuring the glass transition temperature does not affect the structure of the material, and hence does not further limit the claim. Regardless, Isitman teaches that the Tg can be determined using a differential scanning calorimeter (paragraph [0023]).
Regarding claims 18 and 24, Isitman teaches specific embodiments where the rubber composition includes 20.6 phr of SBR with Tg of -53 degrees C, 30 phr of polybutadiene and 55 phr of natural rubber (tables 3-4, compositions E11-E14).
Regarding claim 26, Isitman teaches from about 50 to about 130 phr of silica (paragraph [0029] and optionally about 5 to about 50 phr of carbon black (paragraph [0035]).
Regarding claim 28, Isitman teaches the use of a sulfur containing organosilicon compound (taken to be the claimed silane coupling agent) (paragraphs [0038]-[0044]), such being listed as Silane in the tables (see tables 1 and 3).
Regarding claim 29, Isitman teaches 3,3’-bis (triethoxysilylpropyl) disulfide (paragraph [0039]), which is the component in Si75.
Regarding claims 30-31, Isitman teaches a tread intended to be used for low temperature winter conditions, particularly for vehicular snow driving (paragraph [0003]), such disclosure suggesting using the composition in a passenger and/or winter tire.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Isitman (US Pub. No. 2017/0349733) in view of Kato (JP2019-006880; machine translation relied upon) and Tanaka (US Pub. No. 2015/0007917).
Regarding claim 32, Isitman teaches a tire tread comprising a rubber composition (paragraph [0006]) with one or more rubbers or elastomers containing olefinic unsaturation and having a Tg of less than -50 degrees C, where preferred rubber or elastomers are SBR, natural polyisoprene, and butadiene, where the rubbers may be alkoxy-silyl ended functionalized solution polymerized polymers, including SBR (paragraphs [0015] and [0022]), the rubber composition can include about 50 to about 130 phr of silica (paragraph [0029]), resins including tackifying resins and plasticizers (paragraph [0045]), from 30 to 65 phr of a fatty acid monoester is present, where this fatty acid monoester can comprise octyl oleate as well as other compounds (paragraphs [0006]-[0009]) (this resulting in a range of from 0 to 65 phr of octyl oleate, overlapping the claimed range), sulfur donors and vulcanization accelerators are present and vulcanization takes place (paragraphs [0045]-[0050]), with specific embodiments having 20.6 phr of emulsion polymerized SBR with a Tg of -53 degrees C and 90 phr of silica (tables 3-4, compositions E11-E14). While it is noted that the SBR of the specific embodiments is not functionalized (modified as claimed), Isitman specifically discloses that the SBR may be functionalized (paragraph [0022]), rendering such an alternative embodiment obvious. Isitman does not specifically disclose that the resin is a fully hydrogenated hydrocarbon resin, or the softening point or average molecular weight of the resin. Kato teaches using a fully hydrogenated resin in an amount of 1 to 100 parts by mass, the resin having a molecular weight of several hundred to several thousand g/mol (overlapping the claimed range), where the resin can be a C5-based resin, a C5-C9-based resin, or a C9-based resin (machine translation at pages 3-4), with specific embodiments using Arkon P-140 as the fully hydrogenated resin (machine translation at page 9 - *7 material), such having a softening point of 140±5 °C and an average molecular weight of 1250 g/mol. It would have been obvious to one of ordinary skill in the art to use a fully hydrogenated hydrocarbon resin having softening point and molecular weight as taught by Kato in the tire tread of Isitman in order to improve the wet grip performance of the tire (see machine translation at page 3). Isitman does not specifically disclose the longtotal index of the tread pattern. Tanaka teaches using a tread pattern to improve on-ice performance without sacrificing dry performance and on-snow performance (paragraph [0004]), where the preferable sum Et of the total axial lengths of all the blocks in the tread is not less than 30000 mm and not more than 35000 mm (paragraph [0103]), with a specific tire size of 11R22.5 (paragraph [0109]), such a tire having an outer circumference of about 3200 mm to 3233 mm, resulting in a longtotal index range of from 9.28 (30000/3233) to 10.94 (35000/3200), falling within the claimed range. It would have been obvious to one of ordinary skill in the art to use a total axial length and tire size (resulting in longtotal index) as taught by Tanaka in the tire of Isitman (combined) in order to prevent deterioration of running performance on icy and snowy roads, as well as to prevent deterioration of steering stability (see Tanaka at paragraph [0104]).
Claims 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Isitman in view of Saito and Tanaka as applied to claim 14 above, and further in view of Isitman II (US Pub. No. 2019/0062529).
Regarding claim 20, Isitman teaches that the silica has a preferable range of BET surface area measured using nitrogen gas of about 50 to about 300 m2/g (paragraph [0031]), overlapping the claimed range of NSA. Isitman does not specifically disclose the CTAB value of the silica. In a similar tread composition, with identical disclosed BET and DBP ranges (paragraphs [0051]-[0052]), Isitman II teaches a specific embodiment with a silica having a CTAB value of 125 m2/g (table 1, compositions E2-E3), falling within the claimed range. It would have been obvious to one of ordinary skill in the art to use a silica having a CTAB value as taught by Isitman II in the tire tread of Isitman (combined) as a combination of prior art elements according to known methods to yield predictable results.
Regarding claim 21, the NSA and CTAB values of the silica copolymer is inherent to the material, and the method of measuring these values do not affect the structure of the material, and hence do not further limit the claim. Regardless, Isitman teaches that the NS can be determined using BET (paragraph [0031]).
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Isitman in view of Saito and Tanaka as applied to claim 14 above, and further in view of Lopitaux (US Pub. No. 2010/0256275).
Regarding claim 22, Saito does not specifically disclose the glass transition temperature of the resin. In a reference similarly directed to a tire tread rubber composition, Lopitaux teaches the use of hydrocarbon resins, with a Tg of greater than 20 degrees C, preferably greater than 30 degrees C (overlapping the claimed range) with a molecular weight of more preferably 500 to 1500 g/mol (paragraphs [0088]-[0090]), such being similar to the range of Saito. It would have been obvious to one of ordinary skill in the art to use a Tg as taught by Lopitaux in the tire tread of Isitman (combined) as a known preferable Tg for a hydrocarbon resin in a tire tread.
Regarding claim 23, the glass transition temperature of the resin is inherent to the material, and the method of measuring the glass transition temperature does not affect the structure of the material, and hence does not further limit the claim. Regardless, Isitman teaches that the Tg can be determined using a differential scanning calorimeter (paragraph [0023]), as does Lopitaux (paragraph [0093]).
Response to Arguments
Applicant's arguments filed October 28, 2025 have been fully considered but they are not persuasive.
With regards to claim 14, Applicant argues that Isitman does not teach or suggest the use of from 10 to 20 phr of octyloleate, and that there is nothing demonstrating that the claimed range was a result effective variable. However, as was set forth above, Isitman teaches that from 30 to 65 phr of a fatty acid monoester is present, where this fatty acid monoester can comprise octyl oleate as well as other compounds (paragraphs [0006]-[0009]) (this resulting in a range of from 0 to 65 phr of octyl oleate). In paragraph [0008], Isitman states in pertinent part, “In one embodiment”. Accordingly, in other embodiments, the fatty acid monoester does not have to by 80 percent by weight of an alkyl oleate. Further, applicant has not demonstrated unexpected results commensurate in scope with the claims at least for the reason that only two inventive embodiment compositions were tested, B and D (see table 1), having octyloleate of 14 and 17 phr, there being no data above, below, or at the endpoints of the claimed range, cannot demonstrate unexpected results commensurate with the claimed range. The arguments against Saito and Tanaka are irrelevant with regards to this point because they are not relied on for this teaching.
With regards to new independent claim 33, Applicant argues that Saito’s teaching with regards to “hydrogenated” resins does not encompass “fully hydrogenated” resins as claimed in claim 33. This argument has been considered, and while it has not necessarily been considered persuasive, a rejection in view of Kato has been set forth above, which explicitly discloses fully hydrogenated resins.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/P.N.S/ Examiner, Art Unit 1749 February 12, 2026
/JUSTIN R FISCHER/ Primary Examiner, Art Unit 1749